Assignments

Cease and Desist Letters

When a company learns about an infringing trademark they generally have their lawyer send a "Cease and Desist Letter" (or "C&D Notice") asking the other mark owner to stop infringing. A database of sample letters is posted at www.chillingeffects.org/search.cgi.

Classes

When you register a trademark, you have to indicate on the application what the mark will be used for. To standardize the categories, an international treaty known as the Nice Agreement establishes an International Classification of Goods and Services with 45 classes (1 through 34 for goods, 35 through 41 for services). The International Classes are quite broad, so the USPTO has broken the International Classes into its own more detailed categories, often referred to as "Goods and Services" classes. You can look up Goods and Services classes in The US Acceptable Identification of Goods and Services Manual. Each trademark application filed with the PTO must include at least one Goods or Services class.

These classes and codes can be helpful when searching trademark registration databases. Since most trademark searches are generally looking for situations where a consumer could be confused by the use of similar marks on similar products, limiting a search to goods or services in the same class (or designs with the same or similar Codes) helps pinpoint the marks that would be most likely to create confusion.

Obtaining U.S. Trademark Registration Records

The USPTO posts a free database of Federal trademark registration records called the Trademark Electronic Search System (TESS). TESS includes live, dead and pending Federal marks. You can see images. The database is current within a month of filing, and the system permits Basic or Advanced Boolean searching. Very nice.

More recently filed Federal trademarks registrations can be retrieved at the USPTO's Trademark Search Facility in Arlington, VA (703-308-9800).

Fee-Based Alternatives: You can get U.S. Federal and state trademark registration records through several fee-based systems including CSC's ActiveIP, Coresearch, Trademark Explorer, Lexis (TRDMRK;FEDTM for U.S. or TRDMRK;ALLTM for Federal and State), Westlaw (FED-TM), Thomson Compumark's SAEGIS and Name Protect. Westlaw and SAEGIS feature Thomson Compumark's TRADEMARKSCAN databases.

Obtaining U.S. File Wrappers

A "File Wrapper" contains all the documents in the U.S. PTO file for a trademark. Electronic copies of many U.S. file wrappers are available through a USPTO Web portal called the Trademark Document Retrieval (TDR) system. Otherwise, you can hire a company to get copies for you from the USPTO's
Trademark Search Facility in Arlington, VA (703-308-9800).

Legal Research Materials

Here are some legal research resources I have found useful for answering trademark requests.

McCarthy on Trademarks and Unfair Competition (West) is the leading trademark treatise.

The PTO's Trademark Manual of Examining Procedure (TMEP) is the rulebook for trademark examiners reviewing trademark applications. The TMEP is also available on Lexis (TRDMRK;TMEP). The GPO stopped publishing a print edition in 2014, but you can still buy the print version from IP Data Corporation. The 6th and 7th editions of the TMEP are available in the HeinOnline Intellectual Property Law Collection (subscription only).

Legislative history materials for the Lanham Trade-Mark Act (P.L. 489, 79th Congress, Chapter 540, 2nd Session) in The New Trade-Mark Manual by Daphne Robert and Trademark Protection and Practice: Section by Section Legislative History of the Lanham Act (Lexis/Matthew Bender, 1993) by Jerome Gilson. If you don't have ready access to these books, you can gather the legislative history materials on your own using the resources discussed in the "Federal Legislative History" entry.

The Products Comparison Manual for Trademark Users (BNA Books) by Francis M. Pinckney identifies judicial opinions that discuss the common use of a trademark by two types of business (e.g., a restaurant and a massage parlor).

Allen's Trademark Digest, which has categorizes cases involving Goods and Services in Conflict (e.g., eye make-up remover v. false eye lash remover) and Marks in Conflict (e.g. Lissen v Listen). The Digest is available in print from Wolters Kluwer and on CCH Intelliconnect.

Documents filed in trademark disputes before the Trademark Trial and Appeal Board, including final decisions, are available through the TTAB Trademark Trial and Appeal Board Inquiry System (TTABVUE). TTABVUE should be comprehensive starting in 2003. For better searching, the "Intellectual Property Administrative Filings" (IPADMIN-FILINGS) database on WestlawNext has TTAB filings. Final TTAB decisions are also published in BNA's United States Patent Quarterly, which is available in print and through Bloomberg Law and the IP Resource Center on BNA.com.

You can Shepardize or KeyCite TTAB decision on Lexis and Westlaw, respectively. On Lexis, the format is "[year] TTAB LEXIS [decision number]" but you have to know the Lexis decision number to get the Shepard's Report.

The TTAB issues some unpublished, non-precedential decisions. Unpublished decisions are summarized in the Official Gazette (OG) of the PTO. You can find the full text using the
TTABVUE. I believe you can also buy the full text from BNA, if you can't locate the ones you want in TTABVUE.

There are several TTAB practice treatises including the Guide to TTAB Practice, a detailed step-by-step manual (Aspen)
by Jeffery A. Handelman, Trademark Trial and Appeal Board Practice and Procedure, which includes sample forms (West) by Gary D. Grugman, and A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice (ABA) edited by Jonathan Hudis.

B. Special U.S. Trademark Searches

Preliminary and Comprehensive Searches

U.S. law permits a person to acquire rights to a trademark through either registration or through common law use. So, to see if a mark (or something similar) is already in use, you have to check both the state and Federal registration databases discussed above and common law use.

I have often been asked to do a preliminary search to see if a mark is in use. This entails searching (1) the federal and state registration databases discussed above, (2) the Internet using two or more good search engines, (3) any of the fee-based services discussed in the Getting U.S. Trademark Registration Records section, above, that you have available and (4) additional reasonably priced databases to find common law uses in the news, published judicial opinions, domain names, product name (e.g., Amazon.com, Google Product Search), etc. This preliminary search should pick up any obvious uses, and it may make a comprehensive search unnecessary.

To really clear a mark you will need a comprehensive trademark search. Comprehensive searching is done by in-house professionals or private companies, such as Thomson CompuMark (800-692-8833), and Government Liaison Services (800-642-6564).

Litigation Searches

LitAlert (Proquest Dialog) and LexMachina may be able to tell you if a company or an individual has been or is currently involved in trademark litigation. Alternatively, on the Federal level, you can search on the company name in the PACER Case Locator or one of the commercial docket search vendors and limit the Nature of Suit (NOS) code to 840 (Trademarks). If the trademark is a word, you can search the word in Bloomberg Law and limit the results to NOS 840 (Trademarks). You can also search the Intellectual Property Trial Court documents (IP-FILING) database on Westlaw.

You might also want to search the TTAB Inquiry System for cases before the USPTO's Trademark Trial and Appeal Board.

Section 337 of the provides for expedited proceedings to decide trademark infringement cases concerning goods imported into the U.S. The cases are tried by the International Trade Commission and can be searched using Westlaw (FINT-ITC), Courtlink, or the ITC's EDIS database.

Watches

Trademark holders will often want to "watch" for the registration or use of similar or identical marks. Catching a similar or identical use is the first step in "policing" a mark so that it does not become generic.

One way to "watch" is to search periodically through the relevant databases for a preliminary search (discussed above). Or you can also set up automated watches using most of the commercial services including Coresearch, SAEGIS and ActiveIP.

If you want to turn the job over to a pro, most of the serious trademark research firms will conduct regular watches (see "Preliminary and Comprehensive Searches," above).

Foreign Legal Materials

For information on the trademark laws of individual foreign countries see Trademarks Throughout the World (West), which is available as a multi-volume looseleaf or on Westlaw (TMWORLD). See also the Manual for the Handling of Applications for Patents, Designs and Trademarks Throughout the World, published by Wolters Kluwer (formerly by Property B.V.) and available online at KluwerManualIP.com (subscription).
European Trademark Law: Community Trademark Law and Harmonized National Trademark Law (Aspen) covers both EU legislation and EU case law.

English versions of the trademark laws of most countries are published in Industrial Property Laws and Treaties of the World (WIPO). Trademark laws enacted after 2000 are posted in WIPO's Collection of Laws for Electronic Access (CLEA) database.

Trademark Practice and Forms (Oxford University Press) explains how to register trademarks abroad, as does the extensive Manual for the Handling of Applications for Patents, Designs and Trademarks Throughout the World, published in The Netherlands by Manual Industrial Property B.V. and available in the U.S. from Aspen. You can also get information from the web site of the relevant country's trademark registry agency, although the information may not be available in English.

{Thanks to Kim Martin, Reference Librarian in the Boston office Goodwin Procter LLP, for reviewing this entry in September, 2010. Thanks also to Lucy Curci-Gonzalez for her help with the "Classes" section, and for putting me in touch with Kim Martin.}

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